IPSC, Copyright Theory II

Posted on August 7, 2015 by rtushnet
Copyright Theory II 
 
Brad Greenberg Columbia Law School
Bizarro Copyright
 
Does having lots of different antennas in one place v. all over the place make a difference to whether there is public performance? Central question of Aereo: looks like cable, must be cable.  Aereo follows a long line of cases about new tech asking whether judges should look inside the machine or just look at the inputs and outputs.  The case is thus fairly ordinary.  Why it matters: constanct conflicts over behavioral perspective (majority) or technological/structural perspective (dissent).  Who should decide how © touches new tech: the answer is determined by behavioral v. structural perspective.  Statutory signals theory applied in Aereo and Google Book Search.
 
Napster and Grokster: different tech, same result.  Goes back at least to White-Smith Music; also occurred in video game cases. Majority position in White-Smith is structural: absent machine, piano roll is unintelligible.  Dissent takes behavioral perspective: no reason to decouple roll from machine; makes a sound that sounds like the song.
 
Structural perspective: narrower rights and narrower limits.  Behavioral: broader rights and broader limitations, like fair use.
 
Who should decide? Congress has increasingly punted on tailoring © to new tech. Presumptively, courts and CO articulate limitations. Two key features of 1976 signal congressional deference: tech neutrality and standards over rules.  Tech neutral: §101, 102, 106 exclusive rights.  Tech specific: §108, 111, 115-119, 122.  The choice of provisions is important signal for how © should be applied by future courts—behavioral or structural.
 
Google Books: outcome would be different if it were a full digital library, not just snippets, and so it should be. Fair use is tech neutral and flexible. Behavioral is the right perspective because §106 rights are tech-neutral.  Even if the cable analogy is wrong, it’s likely that it doesn’t matter b/c the court had to find some way to shoehorn its decision into §106.
 
Counterargument: Congress has tinkered plenty w/satellite tech, compulsory license, etc. That’s true, and when you ask about §119 etc. you probably do need a structural inquiry/ask about Congress’ particular mindset, but for now everything else falls under §106 by default.
 
Christina Mulligan: If Aereo is rightly decided, is the RAM copy doctrine wrong?
 
A: It should be wrong, but it’s probably not b/c Congress did tinker w/§117 in response.  First sale is a similar issue. 
 
Jake Linford: One way to read Aereo is just Breyer as Cong. intent and Scalia as text—isn’t this the same dumb point that isn’t really about ©?
 
A: would make the same argument regardless.  Second Circuit was much more about behavior v. structure.
 
Q: Ambiguity in question of who should decide.  What has Congress done? Who ought to be deciding various parts of the © system?
 
A: taking an imperfect world—judges regularly look to statute for answers.  Judges often choose a perspective w/o explaining why or even saying that they are. Maybe Congress isn’t the best source of innovation policy, but it’s what we’ve got.
 
Peter DiCola: White-Smithisn’t as clean as that either. The president had weighed in publicly; there were already negotiations in Congress.  I’ve interpreted that case as being about the Court pushing the parties to bargain; composers weren’t coming to the table and were being punished for bad behavior in licensing only one company.  1976: §106(4) and 106(6) are tech-specific and Congress did decide to do it that way.  They’re broad in rights and narrow in most exceptions—which signal is Congress giving? It will always be mixed.
 
A: see those as tethered to tech mindset of Congress—intent to be tech neutral to the extent that something can be publicly performed (?) regardless of whether tech was known in 1976.
 
Sag: number of aerials didn’t matter in Aereo. What mattered was interposition of lots of copies (even though that wasn’t before the Court).
 
A: Aereo is a tough example b/c so many people don’t like it, but that still shows his point.
 
RT: Behavior: is that right?  B/c I think you mean audience reception. Connects Aereo to Tasini, a connection made by the Court itself. Connected to what you mean by tech neutrality. Both parties claimed the mantle of tech neutrality.  Neutrality means different things to different people, as in equal protection.
 
Kevin Hickey, University of California, Berkeley, School of Law, Center for Law & Technology
Paternalism in Copyright
 
Aims: explore tension between incentive model of © and its paternalistic provisions; envision legal structure of © if we took paternalistic impulse seriously—a thought experiment, not a normative endorsement.
 
What do we mean by paternalism? State limits choices of individuals to protect them from consequences of their own decisions. Nothing inherently wrong with intervention.
 
Soft paternalism tends to fail for the very reasons that motivated the regulation in the first instance.  (RT: And the existence of entities motivated to make it fail, pace Lauren Willis!)
 
Potential behavioral market failures: creation stage (intrinsic motivation; judgment under uncertainty—© as distant, uncertain, indirect incentive, but contrary to that are lottery effects).  Also assignment stage: bounded willpower/short-sightedness; social preferences for “fair” allocations v. the endowment effect.
 
Paternalism in ©: termination rights; elimination of formalities; limitations on alienability (writing requirement); moral rights. Due to lack of bargaining power, short-sightedness, poverty, uncertain valuation.
 
Tension between incentive model with its rational actors and paternalistic provisions; rational actors respond to 20 additional years of protection after life +50, but paternalistic provision supposes an author incapable of protecting her own interest, making bad deals—if those bad deals are made, then the prospect of future rewards wasn’t driving creation in the first place.
 
Normative and policy implications: current hybrid model risks costs of moral rights like system without the benefits. Social costs of expansive, default © through eliminating formalities.  Fails in curing perceived unfairness and actually securing a piece of the profits for the author. Existing author protections are weak and ineffective for the vast majority of authors (whose rights aren’t that valuable 35 years later).  Writing requirement might help a bit, but it just means they sign away rights for a pittance instead of orally granting them for a pittance. 
 
Taken seriously, we’d either eliminate paternalistic provisions and reintroduce formalities, or do more in the way of author protection such as EU-style voidable terms, mandated fair compensation; incentives would focus on present-time, direct, certain outcomes.
 
Betsy Rosenblatt: how much is paternalism v. market uncertainty/accounting for an unknown future?  Formalities are value-neutral; others are harder to chalk up to that.
 
A: often given as justification for termination, but publishers are also subject to uncertainty; transferring risk to publishers may make sense given publishers’ portfolio.  Regardless whether it’s short sighted or difficulty in valuing, it’s paternalistic in operation. 
 
RT: What if it doesn’t matter what the law is? Abraham Drassinower & Jessica Silbey: if all you’re about is incentives, then there’s really just one entity, TM/©/patent/IP.  Also Laura J. Murray, S. Tina Piper, & Kirsty Robertson, Putting Intellectual Property in Its Place: Rights Discourses, Creative Labor, and the Everyday: Rather than listening to experts, “people actually choose to understand the law through information and opinion gathered from friends, strangers, coworkers, and the media.” If you gave up on people understanding the law, at least at the point of creation, then you could essentially ignore the creation stage in terms of making authors better off.  You’d be led to focus on the assignment or commercialization stage.
 
A: thinks the law matters.  (But I think you can’t have that as the assumption for this project.)  Would also be led to think about access to lawyers as well.  (Again, that’d be after creation, which has implications for which provisions would work to help authors.)
 
Sag: Add in compulsory remuneration.  How is this different to distributional concerns in ©?
 
Q: difference b/t irrational and uninformed.  (Hmm, not sure that’s true. Chicago school people would disagree b/c the choice to become informed is itself a cost that people choose to bear or not bear.)  In formalities, formalities limit my freedom.  Creators wouldn’t understand that they needed to give notice. There’s a nonpaternalistic explanation in terms of market structure.  (?  But notice requirements are useful in forcing information so that markets can more easily form.)
 
A: There is evidence that termination rights exist to protect the impecunious/irresponsible author.  These are fairly weak default rules; if we are serious we’d want something stronger.   Push back on formalities elimination as nonpaternalistic. Depends on whether your baseline is © as natural right or statutory right.  Elimination does depend on conception of authors as careless.
 
Q: Keep an eye on the context of the time: eliminating formalities was also about joining Berne.  (Which pushes the issue back to a different entity: why were formalities eliminated from Berne? Answer may well be that it wasn’t paternalistic but based on authors’ rights view, a kind of romanticism—but consider that elevating authors as more important than other kinds of people and thus giving them special rights is just the flip side of paternalism, as the sexism inherent in the term indicates—putting on a pedestal = putting in a cage in many ways.)
 
VARA allows for waiver, but not transfer.  That may hurt authors.
 
Margot Kaminski & Guy Rub, Ohio State University College of Law
Zoom-in Zoom-out of Copyright
 
Outcome of cases/scope of copyright protection is determined by court’s point of reference. If you evaluate a small unit (God’s finger touching Adam’s in the Sistine Chapel), you give strong copyright protection/shrink the public domain.  You get lots of different IP rights/transaction costs.  If you zoom way out (the whole ceiling) you frustrate other interests by weakening ©, and maybe unfairly punish people who create complex works.
 
Natural tendency of © in US is that © owners argue for zooming in as much as possible for statutory damages/fair use, but only up to the point of invalidity.  Statutory framework: the word “work” is not defined. After formalities were limited, authors can do whatever they want at the point of claiming infringement, and registration is a huge mess for these purposes.
 
Our work is about zooming as a framing decision that judges or regulators or legislators make. It’s not about defining a work.  Judicial framing move takes place across doctrines.  Initial findings: courts often set level of zooming without noticing the issue; if noticed, do it without principled reasoning; if do reason, adopt different tests across and even within doctrines.
 
Example: statutory damages.  Factors: independent economic value; can each TV episode be consumed separately; was each episode produced separately; registration as an additional factor. W/two albums, 2d Cir. rejected independent economic value test because (1) statutory text says one compilation is one statutory damages award; (2) © owner decided to bundle the songs together.  Under Arista Records, SDNY 2010, court says that if, before infringement, the copyright owner offers an unbundled product, zooming in is appropriate.  (Of course even before iTunes there was sample licensing for individual songs, so there was “unbundling” of a sort even w/in songs since the 1990s at least.)
Registration to the rescue? Author expressing intent through registration system; cost of registration at least helps.  But it doesn’t work because it has its own zoom problem. 9thCir. found that registration of database of stock photos registers every photo; SDNY has found to the contrary. Having the DB registration reach individual works w/o having to list indiv. works eliminates the utility of registration and don’t have transaction costs identifying each work as a work. 
 
New Copyright Office compendium: (1) registration policy sometimes conflicts w/statutory damages approach—allows author to register one CD as unit of registration, which reaches each individual song. That’s the opposite of the result in the courts. (2) registration policy is calibrated against statutory damages!  CO sets policy as a result of what CO thinks result would be in statutory damages case.  CO assumes that unpublished works should be registered as individual works, not compilation, b/c it wants to preserve statutory damages.
 
There are multiple inconsistent tests where they exist.  Four factor fair use test also has zooming problems: factor three amount (factor four also has a zooming problem).  Photocopying cases show this: Williams & Wilkins looked at all the magazines; Texaco looked at each article and was the only one that engaged in reasoning; Princeton Univ. Press looked at each article; Cambridge Univ. Press v. Patton zoomed out & thought the issue was raised too late.
 
Zooming and substantial similarity: total concept and feel of rugs in 2d Cir.; Calabresi wants zoom in to make sure that public domain works are discounted.
 
Zooming and authorship: Garcia v. Google.  Majority says: this is one work.  If so, she’s not a joint author.  Kozinski fights the zooming and looks at 5 seconds as relevant reference point.  Maybe she can be the author of that.  (I think it’s worse than that—it’s not the 5 seconds but the performance in that 5 seconds.) 
 
Also finds zooming in other areas: Notice; revision of collective work; separability with PGS works; etc.
 
Questions: other areas of IP law where this happens?  Scope of project—descriptive v. presecriptive?  Judges versus regulators v. legislatures?
 
Q: some of these questions are more about sets than zooming in and out.
 
Andrew Gilden: is this an evidentiary q—how to courts prove their conclusions?  But if it’s more a conceptual issue, then looking at briefs in the cases might help.
 
Ramsey: songs in an album are easier to count than characters in a book—there might be a bunch of ways to count in a book.  [I’d also note, as above, that chunks of a song can be counted in particular contexts, such as ringtones and sampling.]
 
Sag: some approaches have no limiting principle—turtles all the way down. Those approaches are probably wrong.
 
A: we can probably agree that Garcia’s position won’t work.
 
Q: market effect in fair use, definition of nascent markets—it also occurs.  Choosing which it is pervades © generally.
 
Q: if you take the 2d Cir. approach, I have serious issues with newspapers/photo collections. You just couldn’t register at an acceptable cost.  But newspapers will license individual articles.
 
Niva Elkin-Koren, Haifa Center for Law & Technology, & Orit Fischman-Afori, The Haim Striks School of Law, College of Management Academic Studies
Rulifying Fair Use 
 
Presented by Fischman-Afori.  The trigger was the Cambridge Univ. Press case, a rule against fair use rulification.  Fair use is a standard; can courts develop the standard into more concrete guidelines? 
Their position: rules/standards is a spectrum, not a dichotomy. Fair use was not meant to foreclose evolution into more concrete guidelines. Rulification can serve copyright goals. Courts should do more rulifying and the 11thCir. is wrong. Ancillary rules to assist the court—does fair use prohibit any such ancillary rules or is it a mandatory rule against rulification?  Designed as a permissive standard.  Lower courts have allowed some rulification, with Cambridge Univ. Press being the big (and bad) exception.
 
Advantages: avoid uncertainty creating a chilling effect; allows both flexibility and certainty.  You can have your cake and eat it too because rules/standards are a spectrum.  Transparency: avoid manipulation of the fair use four-factor analysis. Rulification may force judges to fully disclose underlying analysis.
 
Q: Appellate court in Cambridge Univ. Press was concerned w/ 10% being pulled of thin air; we have more rulification than you suggest.  Timeshifting = fair use is also a rule.  Transformativeness is also quickly becoming a rule of its own—Neil Netanel’s work.
 
Q: SCt doesn’t say every parody is fair use.  DCt went much further than any previous court.  Safe harbor = not the same as a rule.
 
A: our paper does address difference b/t common law style rulification and safe harbors. We should check what the rules are. There are 75% safe harbors, etc. 
 
Sag: doesn’t think categories are the same as rules—reverse engineering, genuine parodies, digitizing library to make a search index—but maybe we’re just debating terminology.  Clear categories do provide guidance.  10% rule also, but that’s subject to gaming, so there’s a huge difference.  If we could rulify fair use we wouldn’t need fair use.
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Another circuit agrees that Dastar-barred claims can’t be repled as false advertising

Posted on August 7, 2015 by rtushnet
Kehoe Component Sales Inc. v. Best Lighting Products, Inc.,
— F.3d —-, No. 14–3347, 2015 WL 4635824 (6th Cir. Aug. 5, 2015)
 
Best asked Kehoe (“Pace”) to make specialized
lighting products for Best.  After Pace
made enough units to fill Best’s product orders, it used the same molds to make
thousands of additional units of exactly the same products. Pace then sold
those “cloned” products under its own name to several of Best’s customers.  Unsurprisingly, a lawsuit resulted.  The district court found Pace liable to Best
for misappropriation of trade secrets under Ohio law, “reverse passing off” and
false advertising in violation of the Lanham Act, breach of contract, tortious
interference, conversion, and breach of warranties, and awarded compensatory
and punitive damages, attorneys’ fees, and injunctive relief.  The court of appeals overturned everything
but the breach of contract and tortious interference liability.
 
Before Best contracted with Pace, Pace had never
manufactured any emergency lighting products, so Best’s founder spent a
significant amount of effort instructing Pace on how to make the molds
necessary to make the specific products that Best sought.  At first, there was no contract barring Pace
from competing with Best. However, in 2004, he emailed Pace’s president
complaining that Pace not only had begun selling products that were identical
to the products that it made for Best, but also that Pace had begun selling
them to Best’s established customers.
 
In 2005, Best then complained that some products Pace made
for it were defective.  The parties
negotiated and Pace transferred some of the molds used to make the products in
question to Best.  In 2006, Best refused
to pay for a substantial number of products that Pace had delivered to it, and
Pace stopped shipments to Best. The parties then negotiated a one-year supply
agreement under which Best agreed to pay its outstanding debt to Pace and to
purchase a minimum of $7 million worth of products from Pace annually.  Pace agreed to a variety of provisions,
including to warrant the quality of the goods, not to “use any [molds] owned by
Best other than for the manufacture of products for sale to Best,” to “assign[
] to Best all designs and intellectual property … for products developed or
to be developed at or by Pace for Best,” and neither to “sell emergency lights
or exit signs nor ballasts, nor solicit sales of these items to any party in
North America without Best’s prior written consent.”
 
Pace received several purchase orders for “cloned” products
from North American companies before this agreement came into effect, and it
shipped products to fill these orders after the agreement came into effect.  Best continued to complain about the quality
of Pace products, and by 2008, Best told Pace that “we are at a point where we
both know we will not be doing any more business.” When the relationship ended,
Pace had all the molds that had been used to manufacture both Best’s products
and the cloned products, and Best owed Pace almost $900,000 for products
delivered but not yet paid for.
 
In 2008, Pace sued Best for breach of contract for failing
to pay. Best requested a setoff of damages for breach of warranty and
counterclaimed for breach of contract, tortious interference, misappropriation
of trade secrets, conversion, and fraud. The case was ongoing when, two years
later, Pace sued Best for misappropriation of trade secrets and tortious
interference.  Best counterclaimed with
its existing counterclaims and also counterclaims under the Lanham Act and for
patent infringement (the last of which was dropped).
 
After finding for Best (though finding it liable for breach
of contract), the district court awarded Best roughly $1.1 million in
compensatory damages, $200,000 in punitive damages, and $850,000 in attorneys’
fees, as well as an injunction barring Pace from making the cloned products and
from using or referencing products that “originated with Best” in its marketing
materials.
 
First, the court of appeals found that the trade secret
claims were time-barred. Ohio’s Uniform Trade Secrets Act (OUTSA) requires that
an action must be commenced within four years after the misappropriation is
discovered or by the exercise of reasonable diligence should have been
discovered. A continuing misappropriation constitutes a single claim.  Best learned of the sales to Best’s customers
in August 2004, but didn’t counterclaim under OUTSA until October 2008.  The district court held that Pace
misappropriated anew when it brought products to market after 2007.  But this was an improper “property-based
theory of trade-secret misappropriation, under which each successive use of a
trade secret is an additional wrong.” 
The limitations period runs from discovery/reasonable discovery, so the
claims were time-barred.
 
The district court also erred by finding that Pace engaged
in false designation of origin via reverse passing off, because of Dastar. 
The district court reasoned that Pace misrepresented its cloned products
by stating that they originated with Pace rather than with Best. But the cloned
products did originate with Pace. “Only
by denominating the cloned products as ‘Best’s products’ could the district
court find that Pace was misrepresenting someone else’s products as its own.”
But Dastar barred that interpretation
of “origin.” (Citing Mark P. McKenna, Dastar’s Next Stand, 19 J. Intell. Prop.
L. 357, 374 (2012) (“A trademark cannot be taken to indicate anything about the
origin of the intellectual creation embodied in that good.”)  “Thus, reselling goods that have been
manufactured by someone else carries different consequences than making your
own copies of those goods and marketing them under your own mark.”
 
Best argued that it “commissioned or assumed responsibility
for (‘stood behind’) production of the physical product,” Dastar.  But that assumed a
trademark owner who allowed the use of its mark on a product, and Best never
claimed to own a relevant trademark in the Pace-branded cloned products.  More fundamentally, Best neither
“commissioned” nor “assumed responsibility” for the cloned products. “As
tangible objects, the cloned products are in every respect Pace’s alone—Best
would much rather that they never have been produced at all.”  Even assuming that Best’s cited cases, which
allowed a reverse passing off claim when a defendant markets another’s product
that’s been only slightly modified and then relabeled, survived Dastar, that wasn’t the situation here.
 
And here’s some useful language, though it’s sad that this
needs to be said: “To the extent that the district court’s liability finding
stemmed from an intuition that the Lanham Act prohibits wholesale copying, that
intuition is misplaced. Protection against imitation and mimicry ordinarily is
found in patent and copyright law, not in the Lanham Act.” It doesn’t matter
whether Best created the market for these goods.
 
The false advertising claim failed for the same
reasons.  The district court found that
Pace’s use of “Best products” in Pace’s own catalogs was a misleading
representation of the products’ origin and thereby violated §43(a)(1)(B).  Even if false advertising were an appropriate
head of liability, we already know that “origin” only refers to the maker of
the tangible object under Dastar.  But regardless, §43(a)(1)(B) covers a false
“designation of origin” or other factual misrepresentation about “the nature,
characteristics, qualities, or geographic origin” of the goods or services. Geographic
origin wasn’t at issue, and a misrepresentation about the source of ideas
embodied in a tangible object “is not a misrepresentation about the nature,
characteristics, or qualities of the object.” 
The characteristics of the good itself—its properties or
capabilities—must be implicated.  The
only falsity here was the misrepresentation that Pace, rather than Best, was
the intellectual origin of the products, and that’s not enough.
 
However, the court of appeals affirmed the finding of breach
of contract, including breach of a noncompete clause.  Pace retained the molds pursuant to its valid
lien for unpaid deliveries of products, so it wasn’t liable for conversion. But
it was liable for tortious interference with established business relationships
and also tortious interference with business expectations.  Pace’s breach of confidence—coupled with the
breach of a specific contractual promise intended to shore up that confidence—was
a sufficiently “improper” means of competition to give rise to liability for
tortious interference.
 
Remand for this and an issue about the breach of warranty
counterclaims; the court of appeals emphasized that the district court was not
barred from awarding “the damages and fees (including punitive damages and
attorneys’ fees, to the extent that they are available) merited by the parties’
conduct.”

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Another circuit agrees that Dastar-barred claims can’t be repled as false advertising

Posted on August 7, 2015 by rtushnet
Kehoe Component Sales Inc. v. Best Lighting Products, Inc., — F.3d —-, No. 14–3347, 2015 WL 4635824 (6th Cir. Aug. 5, 2015)
 
Best asked Kehoe (“Pace”) to make specialized lighting products for Best.  After Pace made enough units to fill Best’s product orders, it used the same molds to make thousands of additional units of exactly the same products. Pace then sold those “cloned” products under its own name to several of Best’s customers.  Unsurprisingly, a lawsuit resulted.  The district court found Pace liable to Best for misappropriation of trade secrets under Ohio law, “reverse passing off” and false advertising in violation of the Lanham Act, breach of contract, tortious interference, conversion, and breach of warranties, and awarded compensatory and punitive damages, attorneys’ fees, and injunctive relief.  The court of appeals overturned everything but the breach of contract and tortious interference liability.
 
Before Best contracted with Pace, Pace had never manufactured any emergency lighting products, so Best’s founder spent a significant amount of effort instructing Pace on how to make the molds necessary to make the specific products that Best sought.  At first, there was no contract barring Pace from competing with Best. However, in 2004, he emailed Pace’s president complaining that Pace not only had begun selling products that were identical to the products that it made for Best, but also that Pace had begun selling them to Best’s established customers.
 
In 2005, Best then complained that some products Pace made for it were defective.  The parties negotiated and Pace transferred some of the molds used to make the products in question to Best.  In 2006, Best refused to pay for a substantial number of products that Pace had delivered to it, and Pace stopped shipments to Best. The parties then negotiated a one-year supply agreement under which Best agreed to pay its outstanding debt to Pace and to purchase a minimum of $7 million worth of products from Pace annually.  Pace agreed to a variety of provisions, including to warrant the quality of the goods, not to “use any [molds] owned by Best other than for the manufacture of products for sale to Best,” to “assign[ ] to Best all designs and intellectual property … for products developed or to be developed at or by Pace for Best,” and neither to “sell emergency lights or exit signs nor ballasts, nor solicit sales of these items to any party in North America without Best’s prior written consent.”
 
Pace received several purchase orders for “cloned” products from North American companies before this agreement came into effect, and it shipped products to fill these orders after the agreement came into effect.  Best continued to complain about the quality of Pace products, and by 2008, Best told Pace that “we are at a point where we both know we will not be doing any more business.” When the relationship ended, Pace had all the molds that had been used to manufacture both Best’s products and the cloned products, and Best owed Pace almost $900,000 for products delivered but not yet paid for.
 
In 2008, Pace sued Best for breach of contract for failing to pay. Best requested a setoff of damages for breach of warranty and counterclaimed for breach of contract, tortious interference, misappropriation of trade secrets, conversion, and fraud. The case was ongoing when, two years later, Pace sued Best for misappropriation of trade secrets and tortious interference.  Best counterclaimed with its existing counterclaims and also counterclaims under the Lanham Act and for patent infringement (the last of which was dropped).
 
After finding for Best (though finding it liable for breach of contract), the district court awarded Best roughly $1.1 million in compensatory damages, $200,000 in punitive damages, and $850,000 in attorneys’ fees, as well as an injunction barring Pace from making the cloned products and from using or referencing products that “originated with Best” in its marketing materials.
 
First, the court of appeals found that the trade secret claims were time-barred. Ohio’s Uniform Trade Secrets Act (OUTSA) requires that an action must be commenced within four years after the misappropriation is discovered or by the exercise of reasonable diligence should have been discovered. A continuing misappropriation constitutes a single claim.  Best learned of the sales to Best’s customers in August 2004, but didn’t counterclaim under OUTSA until October 2008.  The district court held that Pace misappropriated anew when it brought products to market after 2007.  But this was an improper “property-based theory of trade-secret misappropriation, under which each successive use of a trade secret is an additional wrong.”  The limitations period runs from discovery/reasonable discovery, so the claims were time-barred.
 
The district court also erred by finding that Pace engaged in false designation of origin via reverse passing off, because of Dastar.  The district court reasoned that Pace misrepresented its cloned products by stating that they originated with Pace rather than with Best. But the cloned products did originate with Pace. “Only by denominating the cloned products as ‘Best’s products’ could the district court find that Pace was misrepresenting someone else’s products as its own.” But Dastar barred that interpretation of “origin.” (Citing Mark P. McKenna, Dastar’s Next Stand, 19 J. Intell. Prop. L. 357, 374 (2012) (“A trademark cannot be taken to indicate anything about the origin of the intellectual creation embodied in that good.”)  “Thus, reselling goods that have been manufactured by someone else carries different consequences than making your own copies of those goods and marketing them under your own mark.”
 
Best argued that it “commissioned or assumed responsibility for (‘stood behind’) production of the physical product,” Dastar.  But that assumed a trademark owner who allowed the use of its mark on a product, and Best never claimed to own a relevant trademark in the Pace-branded cloned products.  More fundamentally, Best neither “commissioned” nor “assumed responsibility” for the cloned products. “As tangible objects, the cloned products are in every respect Pace’s alone—Best would much rather that they never have been produced at all.”  Even assuming that Best’s cited cases, which allowed a reverse passing off claim when a defendant markets another’s product that’s been only slightly modified and then relabeled, survived Dastar, that wasn’t the situation here.
 
And here’s some useful language, though it’s sad that this needs to be said: “To the extent that the district court’s liability finding stemmed from an intuition that the Lanham Act prohibits wholesale copying, that intuition is misplaced. Protection against imitation and mimicry ordinarily is found in patent and copyright law, not in the Lanham Act.” It doesn’t matter whether Best created the market for these goods.
 
The false advertising claim failed for the same reasons.  The district court found that Pace’s use of “Best products” in Pace’s own catalogs was a misleading representation of the products’ origin and thereby violated §43(a)(1)(B).  Even if false advertising were an appropriate head of liability, we already know that “origin” only refers to the maker of the tangible object under Dastar.  But regardless, §43(a)(1)(B) covers a false “designation of origin” or other factual misrepresentation about “the nature, characteristics, qualities, or geographic origin” of the goods or services. Geographic origin wasn’t at issue, and a misrepresentation about the source of ideas embodied in a tangible object “is not a misrepresentation about the nature, characteristics, or qualities of the object.”  The characteristics of the good itself—its properties or capabilities—must be implicated.  The only falsity here was the misrepresentation that Pace, rather than Best, was the intellectual origin of the products, and that’s not enough.
 
However, the court of appeals affirmed the finding of breach of contract, including breach of a noncompete clause.  Pace retained the molds pursuant to its valid lien for unpaid deliveries of products, so it wasn’t liable for conversion. But it was liable for tortious interference with established business relationships and also tortious interference with business expectations.  Pace’s breach of confidence—coupled with the breach of a specific contractual promise intended to shore up that confidence—was a sufficiently “improper” means of competition to give rise to liability for tortious interference.
 
Remand for this and an issue about the breach of warranty counterclaims; the court of appeals emphasized that the district court was not barred from awarding “the damages and fees (including punitive damages and attorneys’ fees, to the extent that they are available) merited by the parties’ conduct.”
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IPSC, Copyright and Society

Posted on August 6, 2015 by rtushnet
Third Breakout Session: Copyright & Society
 
Clemens Appl & Philipp Homar, Vienna University of
Economics & Business, Education 4.0: Recent Challenges to Copyright
 
From user-generated content to user-generated copyright. Use
of materials for educational purposes is one of the most important aspects of
the project.  Standing on the shoulders
of giants: research and teaching is based on preexisting knowledge.
 
Creation of content in education also matters.  MOOCs, other forms.  Public as distinct from users/“prosumers,”
educational institutions, other intermediaries; European collecting societies
are intermediaries who collect remuneration and fulfill social and cultural
purposes. 
 
Typical forms of digital learning: digital coursepacks;
collaborative learning; student generated content—looking to determine which
are the most common/relevant. 
Reliability and accessibility of resources on multiple devices is
required.  In terms of ©, we have
reproduction and distribution/performance/sharing.  Private and public sphere convergence: not a
small group in the classroom but all over the world.
 
E-learning exceptions exist in Austria and Germany, but they’re
different so that you can’t have cross-border classes without infringing.
Uncertainty despite 2001 Directive allowing use for illustration for teaching
or scientific research with credit “to the extent justified by the
non-commercial purpose to be achieved.” 

Equitable remuneration or Ginsburg’s concept of “permitted but paid” replacing
fair use.  Statutory licenses for
redistribution/not new creativity.  Free
as in free speech, not free as in free beer. 
[I don’t much like this formulation.] Equitable remuneration.
 
Desired outcomes: Regulations with a clear scope; general
clauses aren’t enough for the educational sector. Prevent double remuneration
of rights holders.
 
Kristelia Garcia, University of Colorado Law School,
Facilitating Competition by Punitive Regulation
 
Majors (60% of market) tried to withdraw digital rights from
ASCAP.  Universal secured a rate nearly
2x that ASCAP secured.  First time they’d
tried to license the digital rights by themselves; collectives have always been
justified on ability to minimize transaction costs and use bargaining power,
but this result (2x rate!) suggests a weirdness.  Assignment is not exclusive; Sony/Universal
could have done a deal w/o withdrawing digital rights from ASCAP.  ASCAP’s contracts didn’t allow partial withdrawal:
voluntary, but if you’re in you’re all in.
 
Doubling of the rate: ASCAP is responding to needs of
differently situated members and operating under consent decrees; thus might
not have been able to charge market optimal price. Alternately: pathological
private ordering, her position. 
Negotiations amounted to parallel pricing/tacit collusion.  Collective bargaining made more sense in
analog world; can’t go around to every restaurant. Easier to know what Pandora
played and how many times. 
 
ASCAP had to amend its governing documents to allow partial
withdrawal; SDNY as rate court rejected that. This doesn’t bode well for ASCAP,
or for majors who don’t want to monitor every restaurant.
 
Why should we care? 
Potential for anticompetitive behavior to stifle innovation in the
distribution space.  Sony/Universal went
to the strongest streaming service first—doesn’t encourage new entrants. Can
also be a method to cut out artists’ royalties. 
ASCAP requires royalties to go to artists. 
 
What should we do? 
The rate court? Antitrust? 
Antitrust may have difficult time here—parallel pricing and tacit
collusion don’t violate the Sherman Act etc. They are concerning, but not
enough to violate the law.  Merger review
is usually effective but doesn’t work here, partly b/c of history of
nonintervention by DoJ.  When we went
from 4 major publishers to 3, it didn’t make the situation worse because it was
already crappy.  Consent decrees: the big
hammer—but it’s already in use; the individual publishers don’t operate under
it.  Withdrawal = more concern for
competition than collectives governed by consent decrees. Network effects in
content and tech.
 
Proposal: have gov’t set prices, but allow opt out of
regulation if you can show robust competition in an area. Similar to private
utility regulation.  That increases the
cost of private ordering, but also opens up regulatory gaming/lobbying.
 
Removing digital rights only = remove lots of revenue while
leaving lots of overhead for the group, including the smaller players.  Total withdrawal might eventually lead to a
market clearing solution/lower payments for smaller players.
 
Brauneis: §115 is always an option for covers. When you’re
talking about petitioned opt-out, do you also mean that you want publishers to
be able to exempt themselves from the §115 license?
 
A: No.  Thinking of it
on the other end—mandatory so that you can’t go around it, even with Harry
Fox.  If the licensee doesn’t want to go
to the mandatory route and thinks it can work out a better rate w/the
publisher, it can do so only if it shows the market is competitive. But should
give more thought to the licensor side as well.
 
§115 is less concerning than public performance rights, b/c
Sony and Universal wanted the right to deny licenses altogether. 
 
Matt Sag: how significant is the antitrust exemption for
webcasting? Otherwise this looks like a solid antitrust case.
 
A: We don’t have the smoking gun. 
 
Sag: that’s because they collude with immunity at
SoundExchange. Structural problem.
 
A: agreed. Not enough competition for traditional tools to
work.
 
Sag: in other industries that are this concentrated, the
actors are very careful—the publishers found out that they shouldn’t do this in
the Apple Books case.  But in music, they
have a special room where they can discuss how to kill Pandora. Maybe that’s
the problem.
 
A: root problems w/in the industry are a big deal.  We could move on to full on barriers to
entry, if Sony/Universal pull their content they might be able to prevent
successful streaming services other than the ones they allow/control.
 
Pam Samuelson: who out there could do some worthy
regulation?  Before we say let’s go, who
can do it?  The Copyright Office isn’t
well situated for that kind of market power analysis.  They don’t know enough about the music
industry and their report was not warmly embraced.  Where is there institutional competence to
right this particular balance?  Maybe the
FTC over others, but they’d need some congressional delegation of authority.
 
A: that’s the sticking point.  (Samuelson suggests Tim Wu’s Copyright’s
Communications Policy.)
 
Lisa Macklem, University of Western Ontario
Cash For Content: Profiting from Copyright on the Internet
 
© uses boundaries to control, while the internet was
designed to increase communication/exchange knowledge.  Schumpeter’s theory: evolutionary—different flows
that disrupt existing equilibria. 
Posner: overregulation = artificial rents through scarcity.  Virtually all transactions have some
uncompensated third party effects.  Differences
in the kinds of IP make them inappropriate for property treatment—sui generis
understanding is best.
 
New entrants: internet intermediaries.  Technological neutrality isn’t obviously
connected to ©, but changing the form of the internet has important
implications for ©.  Courts approach new
technologies with new understandings—TV through internet is not legally the
same as TV through the air.
 
Aereo: search for the best analogy. If the goal is to be technologically
neutral, are they finding the right analogy? Unintended winners in Aereo:
consumers insofar as the service spurred TV companies to speed up authorized
online access.
 
Cloud computing: technologically the decision could have
applied to it, but distinguished—this is a danger of getting the analogies
wrong.
 
ESA v. SOCAN, 2012 SCC 34 (Canada 2012)—ESA wanted to
double-dip when video games were played online. 
Licensed music w/in a video game doesn’t justify an additional royalty
when the game is downloaded; that shouldn’t be different than when a physical disk
is purchased.
 
CBC v. SODRAC: CBC uses incidental copies to produce an end
copy that is ultimately shown; simple matter of creating final product. Now
before the Canadian court.  Tech
neutrality as central to ©.  Part of the
balance b/t copyright owners and copyright users.  [History of discourse around what counts as “equal
treatment” suggests that agreement on what neutrality is will be hard to come by.]
 
How Netflix gets it right: tech neutrality can foster
increased distribution/dissemination of knowledge.  More rights owners may have to be satisfied
with smaller slices of the pie. Netflix doesn’t rely on standard Nielsen
ratings—pushing the boundaries of innovation on content.
 
Lea Shaver, Indiana University Robert H. McKinney School of Law
Social Publishing 
 
Book proposal: Book hunger: economic demand for published works
is different from cultural demand. Zulu language—10 million speakers, a lot of
them poor, so standard publishing model doesn’t work and doesn’t generate many
books for them. When social entrepreneurs/nonprofits have taken up the
challenge, though, there is great demand. 
Pratham Books in India—sold cheaply largely to institutional buyers—huge
interest.  Unexpressed demand: publishing
for the blind. 
 
Social publishing: Driven by sense of social mission. Rely
on social subsidies to make the revenue model work—charitable contributions,
gov’t support. More creative approaches to © because not dependent on recouping
costs from sales.  Social distribution:
want to deliver books at the lowest possible price.
 
Business model innovation: they are forced by necessity, b/c
going after hard to reach market niches, to radically innovate v. traditional
publishing model.  Amazon innovated at
one point in the product market; but these organizations have to innovate at
every step to drive down costs of doing business.
 
Content acquisition: First Book is US based organization
that works with for profit publishers who agree to make copies of works
available at 70-90% discount to closed marketplace of organizations, about
70,000 across the US, that serve low income children. They’ve targeted diverse
books—minority characters and authors, not produced by standard market—they’ve
set up an advance purchase commitment w/publishers to change what gets
published.
 
Book Dash: South Africa. Come together to write a book and
give it away. 

Pratham Books: Illustrations are donated to a bank.  Any person can tell a story in their language
using these pictures.  Disrupts our
construct of authorship, revealing it as an effect of the conventional
publication model.
 
Distribution/printing/education: African Storybook Project
distributes works in the form of PowerPoint—the costs of 50 print copies
shipped across bad roads is much greater. 
Enables teachers to translate slides into other languages.

Bookshare in US: Often approached by for-profit publishers interested in their
expertise in ebook platforms and publishing. 
 
Marketing and sales: PJ Library: Funding comes from Jewish
philanthropic sources; Jewish themed books, and work w/different community orgs
to identify Jewish families and mail them a free book each month.  Book serves as marketing for the
organizations.
 
Pratham books—reaching the most remote villages, “the last
child.”  Tried partnership with post
office; with Unilever.  Even if we could
ride the Coca-Cola trucks, it wouldn’t work—because books aren’t a commodity
like Coca-Cola. It’s important that the book be relevant to this particular
person in this particular language. 
Digital distribution can have a broad selection and address niche market
as well as mass.
 
“Mission-driven innovation.” These organizations not focused
on money/profit are able to innovate better than for profit organizations
especially in areas of market failure. 
We should fund organizations that are willing to do the difficult and
expensive work of innovation, which carries large risks of failure.   Future
of publishing industry more broadly?
 
Q: Consider also failures. 
Wikimedia Foundation’s Wikibooks, which has been around for years but
hasn’t succeeded very well. [Great point: taking lessons only from success is a
classic problem of examining innovation.] 
Ways to quantify/reward community production, e.g., with tokens.
 
Samuelson: Brewster Kahle’s Bookmobile in developing
countries: prints out books and gives them away.
 
A: signs of the variability of the possible form.
 
Q: What about “altruistic piracy”?  People who are disseminating cheap copies but
not following all the rules.
 
A: Reminds her of questions about the history of publishing
for the blind—doesn’t know if that story has been told.
 
Matt Sag: There are places where exemptions for blind are
rarely used—other factors are preventing production.
 
A: that’s the story this book plans to tell. You need more
than an exemption.

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IPSC, Copyright and Society

Posted on August 6, 2015 by rtushnet
Third Breakout Session: Copyright & Society
 
Clemens Appl & Philipp Homar, Vienna University of Economics & Business, Education 4.0: Recent Challenges to Copyright
 
From user-generated content to user-generated copyright. Use of materials for educational purposes is one of the most important aspects of the project.  Standing on the shoulders of giants: research and teaching is based on preexisting knowledge.
 
Creation of content in education also matters.  MOOCs, other forms.  Public as distinct from users/“prosumers,” educational institutions, other intermediaries; European collecting societies are intermediaries who collect remuneration and fulfill social and cultural purposes. 
 
Typical forms of digital learning: digital coursepacks; collaborative learning; student generated content—looking to determine which are the most common/relevant.  Reliability and accessibility of resources on multiple devices is required.  In terms of ©, we have reproduction and distribution/performance/sharing.  Private and public sphere convergence: not a small group in the classroom but all over the world.
 
E-learning exceptions exist in Austria and Germany, but they’re different so that you can’t have cross-border classes without infringing. Uncertainty despite 2001 Directive allowing use for illustration for teaching or scientific research with credit “to the extent justified by the non-commercial purpose to be achieved.” 
Equitable remuneration or Ginsburg’s concept of “permitted but paid” replacing fair use.  Statutory licenses for redistribution/not new creativity.  Free as in free speech, not free as in free beer.  [I don’t much like this formulation.] Equitable remuneration.
 
Desired outcomes: Regulations with a clear scope; general clauses aren’t enough for the educational sector. Prevent double remuneration of rights holders.
 
Kristelia Garcia, University of Colorado Law School, Facilitating Competition by Punitive Regulation
 
Majors (60% of market) tried to withdraw digital rights from ASCAP.  Universal secured a rate nearly 2x that ASCAP secured.  First time they’d tried to license the digital rights by themselves; collectives have always been justified on ability to minimize transaction costs and use bargaining power, but this result (2x rate!) suggests a weirdness.  Assignment is not exclusive; Sony/Universal could have done a deal w/o withdrawing digital rights from ASCAP.  ASCAP’s contracts didn’t allow partial withdrawal: voluntary, but if you’re in you’re all in.
 
Doubling of the rate: ASCAP is responding to needs of differently situated members and operating under consent decrees; thus might not have been able to charge market optimal price. Alternately: pathological private ordering, her position.  Negotiations amounted to parallel pricing/tacit collusion.  Collective bargaining made more sense in analog world; can’t go around to every restaurant. Easier to know what Pandora played and how many times. 
 
ASCAP had to amend its governing documents to allow partial withdrawal; SDNY as rate court rejected that. This doesn’t bode well for ASCAP, or for majors who don’t want to monitor every restaurant.
 
Why should we care?  Potential for anticompetitive behavior to stifle innovation in the distribution space.  Sony/Universal went to the strongest streaming service first—doesn’t encourage new entrants. Can also be a method to cut out artists’ royalties.  ASCAP requires royalties to go to artists. 
 
What should we do?  The rate court? Antitrust?  Antitrust may have difficult time here—parallel pricing and tacit collusion don’t violate the Sherman Act etc. They are concerning, but not enough to violate the law.  Merger review is usually effective but doesn’t work here, partly b/c of history of nonintervention by DoJ.  When we went from 4 major publishers to 3, it didn’t make the situation worse because it was already crappy.  Consent decrees: the big hammer—but it’s already in use; the individual publishers don’t operate under it.  Withdrawal = more concern for competition than collectives governed by consent decrees. Network effects in content and tech.
 
Proposal: have gov’t set prices, but allow opt out of regulation if you can show robust competition in an area. Similar to private utility regulation.  That increases the cost of private ordering, but also opens up regulatory gaming/lobbying.
 
Removing digital rights only = remove lots of revenue while leaving lots of overhead for the group, including the smaller players.  Total withdrawal might eventually lead to a market clearing solution/lower payments for smaller players.
 
Brauneis: §115 is always an option for covers. When you’re talking about petitioned opt-out, do you also mean that you want publishers to be able to exempt themselves from the §115 license?
 
A: No.  Thinking of it on the other end—mandatory so that you can’t go around it, even with Harry Fox.  If the licensee doesn’t want to go to the mandatory route and thinks it can work out a better rate w/the publisher, it can do so only if it shows the market is competitive. But should give more thought to the licensor side as well.
 
§115 is less concerning than public performance rights, b/c Sony and Universal wanted the right to deny licenses altogether. 
 
Matt Sag: how significant is the antitrust exemption for webcasting? Otherwise this looks like a solid antitrust case.
 
A: We don’t have the smoking gun. 
 
Sag: that’s because they collude with immunity at SoundExchange. Structural problem.
 
A: agreed. Not enough competition for traditional tools to work.
 
Sag: in other industries that are this concentrated, the actors are very careful—the publishers found out that they shouldn’t do this in the Apple Books case.  But in music, they have a special room where they can discuss how to kill Pandora. Maybe that’s the problem.
 
A: root problems w/in the industry are a big deal.  We could move on to full on barriers to entry, if Sony/Universal pull their content they might be able to prevent successful streaming services other than the ones they allow/control.
 
Pam Samuelson: who out there could do some worthy regulation?  Before we say let’s go, who can do it?  The Copyright Office isn’t well situated for that kind of market power analysis.  They don’t know enough about the music industry and their report was not warmly embraced.  Where is there institutional competence to right this particular balance?  Maybe the FTC over others, but they’d need some congressional delegation of authority.
 
A: that’s the sticking point.  (Samuelson suggests Tim Wu’s Copyright’s Communications Policy.)
 
Lisa Macklem, University of Western Ontario
Cash For Content: Profiting from Copyright on the Internet
 
© uses boundaries to control, while the internet was designed to increase communication/exchange knowledge.  Schumpeter’s theory: evolutionary—different flows that disrupt existing equilibria.  Posner: overregulation = artificial rents through scarcity.  Virtually all transactions have some uncompensated third party effects.  Differences in the kinds of IP make them inappropriate for property treatment—sui generis understanding is best.
 
New entrants: internet intermediaries.  Technological neutrality isn’t obviously connected to ©, but changing the form of the internet has important implications for ©.  Courts approach new technologies with new understandings—TV through internet is not legally the same as TV through the air.
 
Aereo: search for the best analogy. If the goal is to be technologically neutral, are they finding the right analogy? Unintended winners in Aereo: consumers insofar as the service spurred TV companies to speed up authorized online access.
 
Cloud computing: technologically the decision could have applied to it, but distinguished—this is a danger of getting the analogies wrong.
 
ESA v. SOCAN, 2012 SCC 34 (Canada 2012)—ESA wanted to double-dip when video games were played online.  Licensed music w/in a video game doesn’t justify an additional royalty when the game is downloaded; that shouldn’t be different than when a physical disk is purchased.
 
CBC v. SODRAC: CBC uses incidental copies to produce an end copy that is ultimately shown; simple matter of creating final product. Now before the Canadian court.  Tech neutrality as central to ©.  Part of the balance b/t copyright owners and copyright users.  [History of discourse around what counts as “equal treatment” suggests that agreement on what neutrality is will be hard to come by.]
 
How Netflix gets it right: tech neutrality can foster increased distribution/dissemination of knowledge.  More rights owners may have to be satisfied with smaller slices of the pie. Netflix doesn’t rely on standard Nielsen ratings—pushing the boundaries of innovation on content.
 
Lea Shaver, Indiana University Robert H. McKinney School of Law
Social Publishing 
 
Book proposal: Book hunger: economic demand for published works is different from cultural demand. Zulu language—10 million speakers, a lot of them poor, so standard publishing model doesn’t work and doesn’t generate many books for them. When social entrepreneurs/nonprofits have taken up the challenge, though, there is great demand.  Pratham Books in India—sold cheaply largely to institutional buyers—huge interest.  Unexpressed demand: publishing for the blind. 
 
Social publishing: Driven by sense of social mission. Rely on social subsidies to make the revenue model work—charitable contributions, gov’t support. More creative approaches to © because not dependent on recouping costs from sales.  Social distribution: want to deliver books at the lowest possible price.
 
Business model innovation: they are forced by necessity, b/c going after hard to reach market niches, to radically innovate v. traditional publishing model.  Amazon innovated at one point in the product market; but these organizations have to innovate at every step to drive down costs of doing business.
 
Content acquisition: First Book is US based organization that works with for profit publishers who agree to make copies of works available at 70-90% discount to closed marketplace of organizations, about 70,000 across the US, that serve low income children. They’ve targeted diverse books—minority characters and authors, not produced by standard market—they’ve set up an advance purchase commitment w/publishers to change what gets published.
 
Book Dash: South Africa. Come together to write a book and give it away. 
Pratham Books: Illustrations are donated to a bank.  Any person can tell a story in their language using these pictures.  Disrupts our construct of authorship, revealing it as an effect of the conventional publication model.
 
Distribution/printing/education: African Storybook Project distributes works in the form of PowerPoint—the costs of 50 print copies shipped across bad roads is much greater.  Enables teachers to translate slides into other languages.
Bookshare in US: Often approached by for-profit publishers interested in their expertise in ebook platforms and publishing. 
 
Marketing and sales: PJ Library: Funding comes from Jewish philanthropic sources; Jewish themed books, and work w/different community orgs to identify Jewish families and mail them a free book each month.  Book serves as marketing for the organizations.
 
Pratham books—reaching the most remote villages, “the last child.”  Tried partnership with post office; with Unilever.  Even if we could ride the Coca-Cola trucks, it wouldn’t work—because books aren’t a commodity like Coca-Cola. It’s important that the book be relevant to this particular person in this particular language.  Digital distribution can have a broad selection and address niche market as well as mass.
 
“Mission-driven innovation.” These organizations not focused on money/profit are able to innovate better than for profit organizations especially in areas of market failure.  We should fund organizations that are willing to do the difficult and expensive work of innovation, which carries large risks of failure.   Future of publishing industry more broadly?
 
Q: Consider also failures.  Wikimedia Foundation’s Wikibooks, which has been around for years but hasn’t succeeded very well. [Great point: taking lessons only from success is a classic problem of examining innovation.]  Ways to quantify/reward community production, e.g., with tokens.
 
Samuelson: Brewster Kahle’s Bookmobile in developing countries: prints out books and gives them away.
 
A: signs of the variability of the possible form.
 
Q: What about “altruistic piracy”?  People who are disseminating cheap copies but not following all the rules.
 
A: Reminds her of questions about the history of publishing for the blind—doesn’t know if that story has been told.
 
Matt Sag: There are places where exemptions for blind are rarely used—other factors are preventing production.
 
A: that’s the story this book plans to tell. You need more than an exemption.
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IPSC: Other IP

Posted on August 6, 2015 by rtushnet
Other IP  [Insert wry commentary about “fringe” fields like advertising law]
 
Sarah Burstein, The University of Oklahoma College of Law
Reviving Ornamentality 
 
Fed. Cir. killed the doctrine.  Statute says new, original, and ornamental
designs can get a design patent—word has been in the statute from the
start.  What now gets a design patent
does not necessarily fit with assumptions: design patent for a “cage spinal
implant.”  Or a “connector,” where the
only claim is the interface with other parts of the connector to a
computer.  Fuzzy slipper (no infringement
but valid). 
 
Is the PTO asleep at the wheel? No, the problem is the Fed.
Cir.  Regional circuits tended to have “dictated
by function” as floor + something more—beauty, visual appeal.  Fed. Cir. has destroyed that.  (1) Ornamental is the opposite of
functional.  (2) Thus ask whether design
is primarily ornamental or primarily functional.  (3) Won’t choose the latter unless there are
no (good) alternatives.  Clearly wrong:
ornamental is not the opposite of functional. 
A cup handle in the shape of a dragon can be both functional and ornamental.  They’re just different aspects.
 
And it’s not just about channeling.  Should the trade dress functionality
requirement be the same as for design patent? 
Apple v. Samsung: we use the same word for very different concepts, and
should differentiate them further. In trade dress we want to protect real
utility patents; don’t want useful design locked up. That’s part of
ornamentality, but not all.  Some say the
only good reason not to grant a design patent is to protect the utility patent
system.  Rethink ornamentality.
 
The whole concept: make this the visual part, the
unique/signature requirement of design patent; doesn’t appear in any other
regime of law.  Material visual
contribution to the art, using whatever aesthetic you want—has to be plausible
that consumers would care. Traditional decorative arts = presumptively
material.  Fed. Cir. allowed the spinal
implant to be patented b/c the doctor would see it.  But the doctor has no reason to care.
 
RT: Really like the project. (1) If ornamental isn’t the
opposite of functional, then where is the statutory basis for excluding functional
designs from design patent?  (2) Why
shouldn’t the utilitarian functionality standard be at least as broad in design
patent as in TM?  Is your standard for
patentability a requirement of
aesthetic functionality? (Which might itself help serve a channeling function
away from TM.)
 
A: (2) It sort of is. 
That is what design patents are for. 
(1) Ornamentality takes care of that. You have to care about it because
of how it looks, not because of how it works.
 
Q: is it necessary to jettison the utilitarian component as
much?  While the connector if functional,
it also looks sleek and cool.  You buy
the system because it all looks cool.
 
A: but it doesn’t have to be.  Apple wants it that way, but that’s a key
issue with spare parts.
 
Q: Two formulations: one where the consumer is motivated to
purchase, v. one where “do consumers care?” 
The former wipes out a lot of elements that might be important—a Mercedes
key looks really cool, as part of the whole design of the car.
 
Lisa Ramsey: Line drawing: who do we ask?  Industrial designers?  End consumers? 
 
Betsy Rosenblatt: Entire market value rule in patent asks a
similar Q, why do people buy.  Ends up
being very difficult to draw these lines—probably equally difficult in yours.
 
Q: wouldn’t this be redundant w/©, given the history of the
relationship between the two? One of the reasons for design patent’s desuetude
might be the expansion of ©.  Doesn’t
seem like they became popular again until Fed. Cir. enabled them to do
something with them that they couldn’t do with ©.
 
A: it’s not good that you can go under ©’s low bar.
 
Q: British case, Henshire v. ?, 10-12 judges talked about
what they saw as artistic craftsmanship. 
That was something that developed as a © category, in the background of
Ruskin’s philosophy of art. Unworkable, but you still have design protection,
to fill the gray area of functionality and aesthetics.
 
RT: Materiality jurisprudence can fix your problem of
linedrawing!  Materiality is willing to
judge based on wholesale ideas—this is the kind
of thing that sells products of this type—rather than difficult individualized
determinations.
 
Q: is there a difference between lock-in—things you have to
buy—and not.  Also difficulty of
competing without copying—costs of designing around.  “Material” in patent context immediately
brings to mind inequitable conduct, and that’s a sticky idea for patent
lawyers.
 
Q: Bleistein says
you don’t have to make aesthetic judgments when looking at things that are
inherently aesthetic, and you seem to agree, but I think that’s
difficult/impossible. An aesthetic failure is an aesthetic move.
 
Yolanda King, Northern Illinois University College of Law
The Inadvisability of Nonuniformity in the Licensing of
Cover Songs 
 
Copyright Office recommends change in 115(a)(2): compulsory
license includes ability to make arrangement to conform it to style of
performer but can’t change fundamental nature or melody and isn’t copyrightable
as a derivative work w/o consent of copyright owner.  Much criticism of this, but CO recommends
that licensing of cover songs in various formats be changed.  Physical format = subject to §115.  But if you’re going to create a cover and
disseminate it in digital format—download, streaming—then it shouldn’t be
subject to §115. 
 
Her piece analyzes the recommendations.  Most of the report is about harmonization,
including in the music licensing marketplace, e.g., general public performance
right for sound recordings. Here, they’re treating uses differently—disharmonization.  Change in music consumption: physical formats
are predicted to disappear.  Which means
digital uses will take over, not subject to compulsory licensing. Very strange
recommendation; why not just do away with compulsory licensing if compulsory licensing
is so bad?  Burden on creators: most
creators of cover songs will be distributed digitally. 
 
Why would the CO do this?
 
Q: this sounds like politics, not logic. Want to know who
was doing the lobbying.  May be available
information.  (FOIA?) [But this doesn’t
make as much sense as dividing terrestrial from digital radio, because almost
everybody who makes physical records also sells them digitally.]
 
Q: sounds like a foot in the door—first you get digital,
then you argue that digital only is unfair.
 
Q: huge potential deadweight losses in speech, b/c musical ©
owners want to extract rent; opportunity to get rents out of people who currently
aren’t paying—people have been relying on that right for 100 years. 
 
A: Prince is an example: Prince would never license covers.  Unlike the rest of the report, which includes
support and discussion, this change is proposed without much
explanation/citation.
 
Rosenblatt: Some artists are deeply offended by the cover
right.  That lobby is very loud in the
conversation.  Look not just at
ASCAP/Harry Fox but Tresonas of the world: seeks out high school show choirs
& tells them to pay for custom arrangements.
 
Mira Sundara Rajan University of Glasgow – CREATe
Of Murals and Morals: Recent Art Controversies and What They
Signify for the Visual Artists Rights Act (VARA) of 1990 
 
Nearing maturity—what’s happened?  Works themselves: artworks/cultural property
represent a key interest. 
Artists/creators have separate interests.  Owners of artworks; property owners—owners of
buildings where artworks are situated. 
The public as a separate interest holding group.
 
Required to implement Berne Convention.  Protection of artists is weak compared to
other countries.  But also strong in some
respects.  Strong preservation of
artworks. 
 
What’s special about VARA? Destruction is generally
prohibited, which is actually controversial in moral rights generally. Money
damages play an important role and can be large: compensate the artists;
compensate the public/cultural heritage loss. 
Confusion about how to balance artistic interests with private property
ownership.  Potential for radical action
in the public interest, drawing on the ancestral power of VARA.
 
Kent Twitchell, $1.1 million for painting over his Ed Ruscha
mural. Compare France, where in the Hugo case 1 Euro was awarded, as
symbol.  But can money damages adequately
compensate for the destruction of the work? 
5Pointz controversy: court clearly says that they can—a case involving
the “UN of Graffiti,” NY’s “Graffiti Mecca.” 
Painted over by many artists over time.
 
US law is almost unique in destruction prevention (India also
prohibits that) but requires works to be of recognized stature.  Amar Nath Sehgal v. Union of India (Delhi
H.C. 2005)—mural damaged when being taken down for move to another site.  Damage to work occurred in 1978—wheels of
justice grind slowly in India. Court: Moral rights exist in works of art if
they acquire the status of cultural heritage of a nation, given the various int’l
cultural property conventions India signed. 
 
5pointz: site as a whole is not an artwork; ephemeral nature
may be important.  “Recognized stature”:
under Carter v. Helmsley-Spear, must have (1) stature, (2) that is recognized
by experts, public, segment of society. Experts disagreed on requirements for
stature—public exposure; artist stature à work stature;
consensus.  Bottom line: not a “work” and
therefore stature didn’t matter; ephemeral nature of works argued against there
being recognition.  Artists have now sued
for destruction of their works—what a difference a day makes.  Ruling came out one day after the works had
been whitewashed.
 
Picasso work: case won in the court of public opinion; outside
VARA because of timeframe.  California
Art Preservation Act allows public intervention to protect art—allows action to
preserve cultural heritage.  Art
preservation rather than artist rights’ statute?
 
Mary LaFrance University of Nevada, Las Vegas, William S. Boyd
School of Law
False Advertising Claims Against Product Names and Labels 
 
Pom Wonderful: sued for having only a tiny bit of
pomegranate and blueberry juice in its 99.4% apple and grape juice “Pomegranate
Blueberry Juice” product.  SCt found no
FDA safe harbor.  (DCt found same for
USDA in 2008.)  So what makes a label
false or misleading for state law and for the Lanham Act?  Potential for a flood of litigation.
 
Competitors risk the glass houses problem: their own label
is vulnerable to challenge if they sue. 
Pom’s Pomegranate Blueberry—what does that imply about the
contents?  If they called it Blueberry
Pomegranate would they be at risk? 
Claims under state false advertising or deceptive trade practices
acts?  Consumers do have
standing/preemption question is unsettled. 
Consumers don’t worry about the glass houses problem.  Class action issues.
 
Deceptively misdescriptive marks can be registered—PTO may
have different perception of what is deceptive for registration versus false
advertising purposes.  Non-deceptive in
the abstract might be deceptive in context of label/ads. E.g., BREATHASURE.  Registered, but cancelled except for chewing
gum.  Also registered HEALTHASURE for
dietary supplements, which is still on the register.  Harder: health is so broad that perhaps this
is puffery.  Mylanta NIGHT TIME STRENGTH—unregistered;
found to be literally false. 
 
Gerber “Fruit Juice Snacks”—never even tried to register;
false advertising claim allowed by 9th Cir. Label said “nutritious,”
“made w/real fruit juice and other all natural ingredients,” which were corn
syrup and water. Package showed a variety of fruits, but only fruit juice was
white grape juice from conentrate. Consumers might have different meanings.
 
FROOT LOOPS held not to be deceptive—nobody seeing the
packaging would believe there was actual fruit.
 
Terms may have defined meanings under regs, but consumers
probably don’t know those meanings.  What
would consumers expect about Pomegranate Blueberry juice: 50/50? 85/15
(actual)?  15/85?  10% corn syrup?  What do consumers think? Expects a lot of
variation in reactions.  How would Juicy
Fruit fare if seeking registration today?

We don’t know what consumers think of the words: organic, natural, free range,
low fat/fat free/low carb, light/lite, zero trans fat (up to .5 mg/serving by
regs), cholesterol free (up to 2 mg/serving), low cholesterol (up to 20
mg/serving) , zero calories (up to 5 cal/serving), sugar free (up to .5
g/serving), healthy, nutritious, juice v. juice drink v. juice beverage; cane
juice.
 
Courts don’t always require survey evidence and sometimes
ignore survey evidence that was offered. When they believe they know what a
reasonable consumer would infer from a name/label/context.  Courts have not articulated factors or guidelines
for determining what a reasonable consumer infers, unlike the multifactor
likely confusion analysis. [I think that’s a good thing.]  Consumers may see different things.  [What is wrong with probabalistic
analysis?]  Courts do more gut-level analysis
in many situations. [Not clear that differs from TM; see Barton Beebe’s study.]
 
Solutions? 
Legislation/stricture FDA/USDA regulations. Court-developed standards
similar to likelihood of confusion factors? 
Will legal uncertainties be good for consumers by encouraging fuller
disclosures on labels?
 
RT: Flood of litigation: there was a flood pre-Pom because
of California’s law adopting FDA requirements as its own. Not clear how Pom
increases the flood because the preemption and preclusion inquiries are
different.
[more motivation for the cases you choose to describe: why
ask about these particular terms]

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IPSC First Breakout Session, Trademark Registration

Posted on August 6, 2015 by rtushnet
Barton Beebe & Jeanne Fromer, New York University School
of Law Is the Frontier Closing?: Registration Rates of Frequently Used Words on
the PTO’s Trademark Register 
 
Much of TM literature claims that the range of marks is
infinite; Qualitex discusses color
depletion but treats it as an exception. Is this right?  Some press questioning: marketers have
difficulty finding new names for craft beer, band names.  Another piece of conventional wisdom: marks
are an easy shorthand, and thus should be short and easy to remember/not
complicated b/c you want to use it to refer to a complicated set of attributes
that’s hard to articulate: shared by Landes & Posner and Branding for Dummies.
 
USPTO TM case files dataset: 1870-2014 with 7.4 million
applications, 1.8 million live registrations that include one or more letters
at end of 2013, out of 1.9 million live registrations. 820,000 live single word
registrations in 2013.  45 total
classes.  Compare to Corpus of
Contemporary American English, BYU; 450 million word corpus with lots of
sources.
 
What proportion of words in English are subject to TM
registration?  Across how many classes of
goods/services?  Are there changes in the
proportion of fanciful, image, and phrase marks over time?  We suspect that marks are becoming more
complicated over time, more image marks. 
Finally, what are the distances among marks along various dimensions,
such as sound, sight, and meaning.
 
Start with identical matches: word is registered on its own.
1000 most frequently used words: 718 or 71.8% are registered
as single word TMs.
5000 most: 2928 = 58.6%
10,000 most: 5236 = 52.4%
 
Not registered: disease, die, lose, violence, despite,
problems, difficult, daughter, nearly—makes sense they wouldn’t be registered.
 
Whole-word matches: of 1000, 997 or 99.7% are registered
somewhere in principal register, except although, showed, and seemed.
 
What about identical matches in classes: in class 41
(entertainment), 291 of the most popular 1000 are registered.
Whole word, the percentage in each class gets much much
higher. 946 in class 41.
 
Levenshtein matching: edit distance—how close is it to
another word? Dramatic results: most words are registered in most classes. 
 
The frontier is closing. 
Declining proportion of TM applications by year consists of single
words.  Less than 1/10 are standard English
words in 2000; decline is quite steady with internet-era dip.  Steady increase in applied-for marks’ length
as well.  Eclipse – single most
applied-for single word marks.  535
single word applications 1983-2013. 
Publication rates for single-word applications: if you are basing your
application on a registration you already own, you do well; otherwise success
rates are declining. Likewise for Elite, Titan, etc.  We think this is evidence of congestion.  200 most frequently applied for words:
declining publication rate over time (except for incumbents).  People are still trying, but they can’t get
registrations.
 
Surnames: 1000 most common surnames are 41% of population;
982 appear as a term within a registered TM. 
82% are registered as single words in some category.  In class 42, 668 are registered
(computers/tech related)—33% of population has their surname registered in
computers.  Might help explain declining
publication rates for single-word applications for surnames (except for
incumbents—95% success rate for them).  When
there are 100s of registrations of the surname already, even incumbents’
success rate is declining some; nonincumbents’ success rate is going down
further.
 
What remains: phrase marks in more detail; misspellings and
concatenations (which would make our results even more impressive; PTO has
instructions for how to search misspellings which we will use); acronyms;
non-English words; how many n-character words are possible in English given
phonetic constraints; means of measuring phonetic, visual, and conceptual
similarity; syntactic structure; measures of distance other than Levenshtein;
number of descriptive marks per class.
 
Policy implications: tighten protectability/registration
standards?  Instruct examiners
differently in different classes?  Requiring fanciful marks seems extreme (why?);
increased consumer search costs as complexity and congestion increase; effects
on competition—transaction costs, additional barrier for new entrants.
 
Sheff: incumbency effects could be related to inexperience
w/TM office [though to me that wouldn’t change the policy implications]
 
Rebecca Tushnet, Georgetown Law, Registering Discontent 
 
Carol Rose, Crystals
and Mud in Property Law: Legislatures make hard-edged rules and courts tend
to soften them for equitable reasons. 
They go back and forth in her accounts, but in TM they haven’t gone back
and forth, just an initial rule that seems to have gotten muddier and muddier.
 
The forehand: Registration is substantive: Incontestability
for descriptive terms; nationwide scope for local registered marks.  But the backhand: registration is procedural:
the same infringement standard is applied to registered and unregistered marks;
incontestable marks can be limited to essentially zero rights; Dawn Donut takes back almost all of what
nationwide scope gave.  B&B v. Hargis
is consistent w/ the procedural approach: b/c registration and infringement are
judged by the same standards, preclusion can apply.  Substantive: majority comments and Ginsburg’s
concurrence emphasizes that this will rarely happen. 
 
Substantive: Pro-Football court says cancellation doesn’t
preclude protection.  Procedural: Judge
Moore’s additional views in In re Tam say it does.
 
Substantive: registration of standard character mark gives
broader rights than a word in a particular font/design in PTO proceedings.  But procedural: court say that it doesn’t in
infringement proceedings, if you actually use the mark in a particular
font/design; courts also tend to ignore the registration as design/font and
evaluate words more heavily; they don’t notice that there’s a difference
between a picture and a 3D version of the depicted thing, as in the Mardi Gras
Bead Dog case.  Similar issues arise with
dilution, Exxon v. Fox for Fox’s FX logo.
 
(1)  
Should we choose? [My bias is yes.]
(2)  
If so, which? [I am leaning to arguing
substantive]
 
Lunney: small business often misunderstands importance of
registration—they think state registration/state corporate name register means
something, and it doesn’t.  Is
registration meant to be what you can use
or just an initial cut/fence?  Even if it
doesn’t mean much to courts most disputes never get to courts/never even become
disputes.
 
RT: I think that’s a reason to go substantive—it turns out
big entities aren’t deterred in the same way if they really really want to use
the term. [iPhone, etc.]  Equity suggests
that they should be treated the same way.
 
Q: likewise, cautious companies won’t file even if there’s
just substantial common law usage. That may help account for Beebe/Fromer
findings.
 
Q: What implications on First Amendment/treatment of
commercial speech?
 
RT: Trying to avoid that here, but I have no problem making
wholesale rules about preventing misleading speech.
 
Beebe: disclaimers: how they interact w/registration. Courts
ignore them/compare marks as a whole.
 
RT: substantive approach would provide a basis for changing
that.  Disclaimer = confusing similarity
can’t result from the disclaimed term, just like functional feature.
 
Q: other countries have more substantive approach: what
would that look like?  What about
approach of int’l companies?
 
RT: Int’l companies planning for substantive approach is
another reason that US should consider it if their behavior won’t change.  Other countries have double identity, which
could be good if accompanied by a lot of retrenchment in non-double identity
cases; other countries have robust TM use; many of our differences are not
internal to TM but come from broader traditions around advertising and the
First Amendment.
 
Dinwoodie: if you want substantive approach, should rights
contract over time if use is limited in a particular way?  Also must deal with overlap w/43/44—people will
just plead in the alternative if there’s not a clear doctrine.
 
Melissa Wasserman, University of Illinois College of Law
What Administrative Law Can Teach the Trademark System 
 
Intersection of administrative law & TM—proper standards
of review for TTAB determinations. 
Growing issue.  Guideposts in SCt
cases about deference due to informal-type review.  Fed. Cir. caselaw: decides that the review
should be de novo.  Chevron came out
after that; Fed. Cir. never revisited the issue.  In 1993, Fed. Cir. inexplicably applied
Chevron to TTAB’s legal constructions of an ambiguous statutory provision—no Chevron
step zero analysis at all (were they granted such authority); then proceeded to
ignore that in the future.  What about
Skidmore deference?  If you appeal to the
Fed. Cir. you can’t put new evidence in, so at a minimum there should be
Skidmore deference.  Likewise w/factual
Qs the Fed. Cir. isn’t giving enough deference.
 
Normatively: deference would be desirable.  Comparative institutional analysis: expertise
and capture.  Changes to PTO would be
helpful to improve it.  Not many
structures set up on TM side to bias it to granting TMs.  TM fees are set much more to cover costs; 11%
is from actual registrations.  In
comparison to patent side, TM office understudied for particular
incentives.  It’s all comparative—Fed.
Cir. is pro-IP as well.
 
PTO just makes registration determinations, not validity
determinations. If we give more deference to TTAB on validity, think about how
that would affect TM infringement.
 
Lunney: allowing bottle shape to be registered—PTO acted and
CCPA ultimately accepted.  Single color
registration: Fed. Cir. reversed denial and then Qualitex relied on “PTO accepts them!” even though that was only
because they’d been forced to. 
 
TTAB lacks consumer understanding.
 
A: would like to improve their capacity through creation of
guidelines. 
 
Jeremy Sheff: nervous about institutional analysis in the
abstract. Interactions b/t PTO & Congress, PTO is now lobbying to take away
de novo review before district courts & make exclusive avenue of review of
inter partes review at the Fed. Cir. Which is weird if you think of them as
different bodies w/different institutional interests.  PTO is generally P first and T second; patent
office tends to drive policy on these issues. 
If the prerogatives of a TM administrative agency were exercised by a
patent administrative agency, results might differ.
 
RT: I worry about capture—PTO is trying to get © too (look
at recent best practices in DMCA takedowns run by the PTO) and that would make
a huge difference in amount of industry capture; with the recent project on
whether renewals were actually of TMs in use, no one even considered a stronger
use requirement, which is evidence of being only devoted to people who have
lots of registrations.
 
Charles Colman: TTAB doesn’t worry about long term implications
of granting registrations, especially w/district courts—thinks it’s just a
presumption of validity and won’t be incontestable for 5 years.  TTAB also doesn’t know what to do w/parody.
 
A: she proposes a policy group; not just TTAB judges v.
federal district court judges.
 
Megan Carpenter, Texas A&M University School of Law
NSFW: An Empirical Study of Scandalous Trademarks
 
What’s really happening in practice?  26.72% of office actions discussed context;
remainder did not.  TTAB has held that
dictionaries alone can establish scandalousness.  TM examiners have high quarterly quotas and
they have limited time.  To be
outstanding, need 515-575 “balanced disposals” per quota; goals are that complete
examination should occur from search to notice of allowance/office action w/in
7 calendar days of receipt. EAs are under serious pressure to process
applications quickly; dictionaries are easier than assessing meaning in social
context of the day.
 
Dictionaries were primary source of support for rejection
91% of the time, 70% of the time as the only evidence.  17% used media evidence.  Same pattern in niche (adult) markets.  Also cite applicant’s ads.  Almost always used in refusing
registration.  If it’s an adult market,
then it’s evidence that the scandalous meaning is intended/understood.  If it’s a general market, more likely to be
scandalous.  Catch-22.  FAT COCK beer, even with an image of a plump
rooster, was rejected b/c available to general audience.  Same result w/goods or services: if goods are
scandalous then that’s evidence the mark will be scandalous: MR. HORSE COCK for
adult movies.  Deodorant: MY SHIT DON’T
STINK—because it was on nonscandalous goods, it would be available to everyone.
Examiners often recognize the relevance of context de jure, but abandon that de
facto.
 
In our data, success rate was less than 5%, compared to 44%
for small businesses generally—small businesses were over 97% of applications
in her data.  Low probability of response
= related to lack of representation by attorney.  Applicants don’t respond to office actions
very much—about 20% of the time.  80% =
abandonment.  Applicants who do respond
argue contextual factors.  Top arguments:
alternate meanings of words; marketplace context; actual goods.  Only 2 of 232 were successfully passed to
registration.
 
Where you see both approved and rejected: general trends
exist.  Bitch has a larger number than
whore, slut, and pothead. Examiners say that other registrations don’t matter,
but examiners do consider them informally.

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IPSC: Other IP

Posted on August 6, 2015 by rtushnet
Other IP  [Insert wry commentary about “fringe” fields like advertising law]
 
Sarah Burstein, The University of Oklahoma College of Law
Reviving Ornamentality 
 
Fed. Cir. killed the doctrine.  Statute says new, original, and ornamental designs can get a design patent—word has been in the statute from the start.  What now gets a design patent does not necessarily fit with assumptions: design patent for a “cage spinal implant.”  Or a “connector,” where the only claim is the interface with other parts of the connector to a computer.  Fuzzy slipper (no infringement but valid). 
 
Is the PTO asleep at the wheel? No, the problem is the Fed. Cir.  Regional circuits tended to have “dictated by function” as floor + something more—beauty, visual appeal.  Fed. Cir. has destroyed that.  (1) Ornamental is the opposite of functional.  (2) Thus ask whether design is primarily ornamental or primarily functional.  (3) Won’t choose the latter unless there are no (good) alternatives.  Clearly wrong: ornamental is not the opposite of functional.  A cup handle in the shape of a dragon can be both functional and ornamental.  They’re just different aspects.
 
And it’s not just about channeling.  Should the trade dress functionality requirement be the same as for design patent?  Apple v. Samsung: we use the same word for very different concepts, and should differentiate them further. In trade dress we want to protect real utility patents; don’t want useful design locked up. That’s part of ornamentality, but not all.  Some say the only good reason not to grant a design patent is to protect the utility patent system.  Rethink ornamentality.
 
The whole concept: make this the visual part, the unique/signature requirement of design patent; doesn’t appear in any other regime of law.  Material visual contribution to the art, using whatever aesthetic you want—has to be plausible that consumers would care. Traditional decorative arts = presumptively material.  Fed. Cir. allowed the spinal implant to be patented b/c the doctor would see it.  But the doctor has no reason to care.
 
RT: Really like the project. (1) If ornamental isn’t the opposite of functional, then where is the statutory basis for excluding functional designs from design patent?  (2) Why shouldn’t the utilitarian functionality standard be at least as broad in design patent as in TM?  Is your standard for patentability a requirement of aesthetic functionality? (Which might itself help serve a channeling function away from TM.)
 
A: (2) It sort of is.  That is what design patents are for.  (1) Ornamentality takes care of that. You have to care about it because of how it looks, not because of how it works.
 
Q: is it necessary to jettison the utilitarian component as much?  While the connector if functional, it also looks sleek and cool.  You buy the system because it all looks cool.
 
A: but it doesn’t have to be.  Apple wants it that way, but that’s a key issue with spare parts.
 
Q: Two formulations: one where the consumer is motivated to purchase, v. one where “do consumers care?”  The former wipes out a lot of elements that might be important—a Mercedes key looks really cool, as part of the whole design of the car.
 
Lisa Ramsey: Line drawing: who do we ask?  Industrial designers?  End consumers? 
 
Betsy Rosenblatt: Entire market value rule in patent asks a similar Q, why do people buy.  Ends up being very difficult to draw these lines—probably equally difficult in yours.
 
Q: wouldn’t this be redundant w/©, given the history of the relationship between the two? One of the reasons for design patent’s desuetude might be the expansion of ©.  Doesn’t seem like they became popular again until Fed. Cir. enabled them to do something with them that they couldn’t do with ©.
 
A: it’s not good that you can go under ©’s low bar.
 
Q: British case, Henshire v. ?, 10-12 judges talked about what they saw as artistic craftsmanship.  That was something that developed as a © category, in the background of Ruskin’s philosophy of art. Unworkable, but you still have design protection, to fill the gray area of functionality and aesthetics.
 
RT: Materiality jurisprudence can fix your problem of linedrawing!  Materiality is willing to judge based on wholesale ideas—this is the kindof thing that sells products of this type—rather than difficult individualized determinations.
 
Q: is there a difference between lock-in—things you have to buy—and not.  Also difficulty of competing without copying—costs of designing around.  “Material” in patent context immediately brings to mind inequitable conduct, and that’s a sticky idea for patent lawyers.
 
Q: Bleistein says you don’t have to make aesthetic judgments when looking at things that are inherently aesthetic, and you seem to agree, but I think that’s difficult/impossible. An aesthetic failure is an aesthetic move.
 
Yolanda King, Northern Illinois University College of Law
The Inadvisability of Nonuniformity in the Licensing of Cover Songs 
 
Copyright Office recommends change in 115(a)(2): compulsory license includes ability to make arrangement to conform it to style of performer but can’t change fundamental nature or melody and isn’t copyrightable as a derivative work w/o consent of copyright owner.  Much criticism of this, but CO recommends that licensing of cover songs in various formats be changed.  Physical format = subject to §115.  But if you’re going to create a cover and disseminate it in digital format—download, streaming—then it shouldn’t be subject to §115. 
 
Her piece analyzes the recommendations.  Most of the report is about harmonization, including in the music licensing marketplace, e.g., general public performance right for sound recordings. Here, they’re treating uses differently—disharmonization.  Change in music consumption: physical formats are predicted to disappear.  Which means digital uses will take over, not subject to compulsory licensing. Very strange recommendation; why not just do away with compulsory licensing if compulsory licensing is so bad?  Burden on creators: most creators of cover songs will be distributed digitally. 
 
Why would the CO do this?
 
Q: this sounds like politics, not logic. Want to know who was doing the lobbying.  May be available information.  (FOIA?) [But this doesn’t make as much sense as dividing terrestrial from digital radio, because almost everybody who makes physical records also sells them digitally.]
 
Q: sounds like a foot in the door—first you get digital, then you argue that digital only is unfair.
 
Q: huge potential deadweight losses in speech, b/c musical © owners want to extract rent; opportunity to get rents out of people who currently aren’t paying—people have been relying on that right for 100 years. 
 
A: Prince is an example: Prince would never license covers.  Unlike the rest of the report, which includes support and discussion, this change is proposed without much explanation/citation.
 
Rosenblatt: Some artists are deeply offended by the cover right.  That lobby is very loud in the conversation.  Look not just at ASCAP/Harry Fox but Tresonas of the world: seeks out high school show choirs & tells them to pay for custom arrangements.
 
Mira Sundara Rajan University of Glasgow – CREATe
Of Murals and Morals: Recent Art Controversies and What They Signify for the Visual Artists Rights Act (VARA) of 1990 
 
Nearing maturity—what’s happened?  Works themselves: artworks/cultural property represent a key interest.  Artists/creators have separate interests.  Owners of artworks; property owners—owners of buildings where artworks are situated.  The public as a separate interest holding group.
 
Required to implement Berne Convention.  Protection of artists is weak compared to other countries.  But also strong in some respects.  Strong preservation of artworks. 
 
What’s special about VARA? Destruction is generally prohibited, which is actually controversial in moral rights generally. Money damages play an important role and can be large: compensate the artists; compensate the public/cultural heritage loss.  Confusion about how to balance artistic interests with private property ownership.  Potential for radical action in the public interest, drawing on the ancestral power of VARA.
 
Kent Twitchell, $1.1 million for painting over his Ed Ruscha mural. Compare France, where in the Hugo case 1 Euro was awarded, as symbol.  But can money damages adequately compensate for the destruction of the work?  5Pointz controversy: court clearly says that they can—a case involving the “UN of Graffiti,” NY’s “Graffiti Mecca.”  Painted over by many artists over time.
 
US law is almost unique in destruction prevention (India also prohibits that) but requires works to be of recognized stature.  Amar Nath Sehgal v. Union of India (Delhi H.C. 2005)—mural damaged when being taken down for move to another site.  Damage to work occurred in 1978—wheels of justice grind slowly in India. Court: Moral rights exist in works of art if they acquire the status of cultural heritage of a nation, given the various int’l cultural property conventions India signed. 
 
5pointz: site as a whole is not an artwork; ephemeral nature may be important.  “Recognized stature”: under Carter v. Helmsley-Spear, must have (1) stature, (2) that is recognized by experts, public, segment of society. Experts disagreed on requirements for stature—public exposure; artist stature à work stature; consensus.  Bottom line: not a “work” and therefore stature didn’t matter; ephemeral nature of works argued against there being recognition.  Artists have now sued for destruction of their works—what a difference a day makes.  Ruling came out one day after the works had been whitewashed.
 
Picasso work: case won in the court of public opinion; outside VARA because of timeframe.  California Art Preservation Act allows public intervention to protect art—allows action to preserve cultural heritage.  Art preservation rather than artist rights’ statute?
 
Mary LaFrance University of Nevada, Las Vegas, William S. Boyd School of Law
False Advertising Claims Against Product Names and Labels 
 
Pom Wonderful: sued for having only a tiny bit of pomegranate and blueberry juice in its 99.4% apple and grape juice “Pomegranate Blueberry Juice” product.  SCt found no FDA safe harbor.  (DCt found same for USDA in 2008.)  So what makes a label false or misleading for state law and for the Lanham Act?  Potential for a flood of litigation.
 
Competitors risk the glass houses problem: their own label is vulnerable to challenge if they sue.  Pom’s Pomegranate Blueberry—what does that imply about the contents?  If they called it Blueberry Pomegranate would they be at risk?  Claims under state false advertising or deceptive trade practices acts?  Consumers do have standing/preemption question is unsettled.  Consumers don’t worry about the glass houses problem.  Class action issues.
 
Deceptively misdescriptive marks can be registered—PTO may have different perception of what is deceptive for registration versus false advertising purposes.  Non-deceptive in the abstract might be deceptive in context of label/ads. E.g., BREATHASURE.  Registered, but cancelled except for chewing gum.  Also registered HEALTHASURE for dietary supplements, which is still on the register.  Harder: health is so broad that perhaps this is puffery.  Mylanta NIGHT TIME STRENGTH—unregistered; found to be literally false. 
 
Gerber “Fruit Juice Snacks”—never even tried to register; false advertising claim allowed by 9th Cir. Label said “nutritious,” “made w/real fruit juice and other all natural ingredients,” which were corn syrup and water. Package showed a variety of fruits, but only fruit juice was white grape juice from conentrate. Consumers might have different meanings.
 
FROOT LOOPS held not to be deceptive—nobody seeing the packaging would believe there was actual fruit.
 
Terms may have defined meanings under regs, but consumers probably don’t know those meanings.  What would consumers expect about Pomegranate Blueberry juice: 50/50? 85/15 (actual)?  15/85?  10% corn syrup?  What do consumers think? Expects a lot of variation in reactions.  How would Juicy Fruit fare if seeking registration today?
We don’t know what consumers think of the words: organic, natural, free range, low fat/fat free/low carb, light/lite, zero trans fat (up to .5 mg/serving by regs), cholesterol free (up to 2 mg/serving), low cholesterol (up to 20 mg/serving) , zero calories (up to 5 cal/serving), sugar free (up to .5 g/serving), healthy, nutritious, juice v. juice drink v. juice beverage; cane juice.
 
Courts don’t always require survey evidence and sometimes ignore survey evidence that was offered. When they believe they know what a reasonable consumer would infer from a name/label/context.  Courts have not articulated factors or guidelines for determining what a reasonable consumer infers, unlike the multifactor likely confusion analysis. [I think that’s a good thing.]  Consumers may see different things.  [What is wrong with probabalistic analysis?]  Courts do more gut-level analysis in many situations. [Not clear that differs from TM; see Barton Beebe’s study.]
 
Solutions?  Legislation/stricture FDA/USDA regulations. Court-developed standards similar to likelihood of confusion factors?  Will legal uncertainties be good for consumers by encouraging fuller disclosures on labels?
 
RT: Flood of litigation: there was a flood pre-Pom because of California’s law adopting FDA requirements as its own. Not clear how Pom increases the flood because the preemption and preclusion inquiries are different.
[more motivation for the cases you choose to describe: why ask about these particular terms]
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IPSC First Breakout Session, Trademark Registration

Posted on August 6, 2015 by rtushnet
Barton Beebe & Jeanne Fromer, New York University School of Law Is the Frontier Closing?: Registration Rates of Frequently Used Words on the PTO’s Trademark Register 
 
Much of TM literature claims that the range of marks is infinite; Qualitex discusses color depletion but treats it as an exception. Is this right?  Some press questioning: marketers have difficulty finding new names for craft beer, band names.  Another piece of conventional wisdom: marks are an easy shorthand, and thus should be short and easy to remember/not complicated b/c you want to use it to refer to a complicated set of attributes that’s hard to articulate: shared by Landes & Posner and Branding for Dummies.
 
USPTO TM case files dataset: 1870-2014 with 7.4 million applications, 1.8 million live registrations that include one or more letters at end of 2013, out of 1.9 million live registrations. 820,000 live single word registrations in 2013.  45 total classes.  Compare to Corpus of Contemporary American English, BYU; 450 million word corpus with lots of sources.
 
What proportion of words in English are subject to TM registration?  Across how many classes of goods/services?  Are there changes in the proportion of fanciful, image, and phrase marks over time?  We suspect that marks are becoming more complicated over time, more image marks.  Finally, what are the distances among marks along various dimensions, such as sound, sight, and meaning.
 
Start with identical matches: word is registered on its own.
1000 most frequently used words: 718 or 71.8% are registered as single word TMs.
5000 most: 2928 = 58.6%
10,000 most: 5236 = 52.4%
 
Not registered: disease, die, lose, violence, despite, problems, difficult, daughter, nearly—makes sense they wouldn’t be registered.
 
Whole-word matches: of 1000, 997 or 99.7% are registered somewhere in principal register, except although, showed, and seemed.
 
What about identical matches in classes: in class 41 (entertainment), 291 of the most popular 1000 are registered.
Whole word, the percentage in each class gets much much higher. 946 in class 41.
 
Levenshtein matching: edit distance—how close is it to another word? Dramatic results: most words are registered in most classes. 
 
The frontier is closing.  Declining proportion of TM applications by year consists of single words.  Less than 1/10 are standard English words in 2000; decline is quite steady with internet-era dip.  Steady increase in applied-for marks’ length as well.  Eclipse – single most applied-for single word marks.  535 single word applications 1983-2013.  Publication rates for single-word applications: if you are basing your application on a registration you already own, you do well; otherwise success rates are declining. Likewise for Elite, Titan, etc.  We think this is evidence of congestion.  200 most frequently applied for words: declining publication rate over time (except for incumbents).  People are still trying, but they can’t get registrations.
 
Surnames: 1000 most common surnames are 41% of population; 982 appear as a term within a registered TM.  82% are registered as single words in some category.  In class 42, 668 are registered (computers/tech related)—33% of population has their surname registered in computers.  Might help explain declining publication rates for single-word applications for surnames (except for incumbents—95% success rate for them).  When there are 100s of registrations of the surname already, even incumbents’ success rate is declining some; nonincumbents’ success rate is going down further.
 
What remains: phrase marks in more detail; misspellings and concatenations (which would make our results even more impressive; PTO has instructions for how to search misspellings which we will use); acronyms; non-English words; how many n-character words are possible in English given phonetic constraints; means of measuring phonetic, visual, and conceptual similarity; syntactic structure; measures of distance other than Levenshtein; number of descriptive marks per class.
 
Policy implications: tighten protectability/registration standards?  Instruct examiners differently in different classes?  Requiring fanciful marks seems extreme (why?); increased consumer search costs as complexity and congestion increase; effects on competition—transaction costs, additional barrier for new entrants.
 
Sheff: incumbency effects could be related to inexperience w/TM office [though to me that wouldn’t change the policy implications]
 
Rebecca Tushnet, Georgetown Law, Registering Discontent 
 
Carol Rose, Crystals and Mud in Property Law: Legislatures make hard-edged rules and courts tend to soften them for equitable reasons.  They go back and forth in her accounts, but in TM they haven’t gone back and forth, just an initial rule that seems to have gotten muddier and muddier.
 
The forehand: Registration is substantive: Incontestability for descriptive terms; nationwide scope for local registered marks.  But the backhand: registration is procedural: the same infringement standard is applied to registered and unregistered marks; incontestable marks can be limited to essentially zero rights; Dawn Donut takes back almost all of what nationwide scope gave.  B&B v. Hargis is consistent w/ the procedural approach: b/c registration and infringement are judged by the same standards, preclusion can apply.  Substantive: majority comments and Ginsburg’s concurrence emphasizes that this will rarely happen. 
 
Substantive: Pro-Football court says cancellation doesn’t preclude protection.  Procedural: Judge Moore’s additional views in In re Tam say it does.
 
Substantive: registration of standard character mark gives broader rights than a word in a particular font/design in PTO proceedings.  But procedural: court say that it doesn’t in infringement proceedings, if you actually use the mark in a particular font/design; courts also tend to ignore the registration as design/font and evaluate words more heavily; they don’t notice that there’s a difference between a picture and a 3D version of the depicted thing, as in the Mardi Gras Bead Dog case.  Similar issues arise with dilution, Exxon v. Fox for Fox’s FX logo.
 
(1)   Should we choose? [My bias is yes.]
(2)   If so, which? [I am leaning to arguing substantive]
 
Lunney: small business often misunderstands importance of registration—they think state registration/state corporate name register means something, and it doesn’t.  Is registration meant to be what you can useor just an initial cut/fence?  Even if it doesn’t mean much to courts most disputes never get to courts/never even become disputes.
 
RT: I think that’s a reason to go substantive—it turns out big entities aren’t deterred in the same way if they really really want to use the term. [iPhone, etc.]  Equity suggests that they should be treated the same way.
 
Q: likewise, cautious companies won’t file even if there’s just substantial common law usage. That may help account for Beebe/Fromer findings.
 
Q: What implications on First Amendment/treatment of commercial speech?
 
RT: Trying to avoid that here, but I have no problem making wholesale rules about preventing misleading speech.
 
Beebe: disclaimers: how they interact w/registration. Courts ignore them/compare marks as a whole.
 
RT: substantive approach would provide a basis for changing that.  Disclaimer = confusing similarity can’t result from the disclaimed term, just like functional feature.
 
Q: other countries have more substantive approach: what would that look like?  What about approach of int’l companies?
 
RT: Int’l companies planning for substantive approach is another reason that US should consider it if their behavior won’t change.  Other countries have double identity, which could be good if accompanied by a lot of retrenchment in non-double identity cases; other countries have robust TM use; many of our differences are not internal to TM but come from broader traditions around advertising and the First Amendment.
 
Dinwoodie: if you want substantive approach, should rights contract over time if use is limited in a particular way?  Also must deal with overlap w/43/44—people will just plead in the alternative if there’s not a clear doctrine.
 
Melissa Wasserman, University of Illinois College of Law
What Administrative Law Can Teach the Trademark System 
 
Intersection of administrative law & TM—proper standards of review for TTAB determinations.  Growing issue.  Guideposts in SCt cases about deference due to informal-type review.  Fed. Cir. caselaw: decides that the review should be de novo.  Chevron came out after that; Fed. Cir. never revisited the issue.  In 1993, Fed. Cir. inexplicably applied Chevron to TTAB’s legal constructions of an ambiguous statutory provision—no Chevron step zero analysis at all (were they granted such authority); then proceeded to ignore that in the future.  What about Skidmore deference?  If you appeal to the Fed. Cir. you can’t put new evidence in, so at a minimum there should be Skidmore deference.  Likewise w/factual Qs the Fed. Cir. isn’t giving enough deference.
 
Normatively: deference would be desirable.  Comparative institutional analysis: expertise and capture.  Changes to PTO would be helpful to improve it.  Not many structures set up on TM side to bias it to granting TMs.  TM fees are set much more to cover costs; 11% is from actual registrations.  In comparison to patent side, TM office understudied for particular incentives.  It’s all comparative—Fed. Cir. is pro-IP as well.
 
PTO just makes registration determinations, not validity determinations. If we give more deference to TTAB on validity, think about how that would affect TM infringement.
 
Lunney: allowing bottle shape to be registered—PTO acted and CCPA ultimately accepted.  Single color registration: Fed. Cir. reversed denial and then Qualitex relied on “PTO accepts them!” even though that was only because they’d been forced to. 
 
TTAB lacks consumer understanding.
 
A: would like to improve their capacity through creation of guidelines. 
 
Jeremy Sheff: nervous about institutional analysis in the abstract. Interactions b/t PTO & Congress, PTO is now lobbying to take away de novo review before district courts & make exclusive avenue of review of inter partes review at the Fed. Cir. Which is weird if you think of them as different bodies w/different institutional interests.  PTO is generally P first and T second; patent office tends to drive policy on these issues.  If the prerogatives of a TM administrative agency were exercised by a patent administrative agency, results might differ.
 
RT: I worry about capture—PTO is trying to get © too (look at recent best practices in DMCA takedowns run by the PTO) and that would make a huge difference in amount of industry capture; with the recent project on whether renewals were actually of TMs in use, no one even considered a stronger use requirement, which is evidence of being only devoted to people who have lots of registrations.
 
Charles Colman: TTAB doesn’t worry about long term implications of granting registrations, especially w/district courts—thinks it’s just a presumption of validity and won’t be incontestable for 5 years.  TTAB also doesn’t know what to do w/parody.
 
A: she proposes a policy group; not just TTAB judges v. federal district court judges.
 
Megan Carpenter, Texas A&M University School of Law
NSFW: An Empirical Study of Scandalous Trademarks
 
What’s really happening in practice?  26.72% of office actions discussed context; remainder did not.  TTAB has held that dictionaries alone can establish scandalousness.  TM examiners have high quarterly quotas and they have limited time.  To be outstanding, need 515-575 “balanced disposals” per quota; goals are that complete examination should occur from search to notice of allowance/office action w/in 7 calendar days of receipt. EAs are under serious pressure to process applications quickly; dictionaries are easier than assessing meaning in social context of the day.
 
Dictionaries were primary source of support for rejection 91% of the time, 70% of the time as the only evidence.  17% used media evidence.  Same pattern in niche (adult) markets.  Also cite applicant’s ads.  Almost always used in refusing registration.  If it’s an adult market, then it’s evidence that the scandalous meaning is intended/understood.  If it’s a general market, more likely to be scandalous.  Catch-22.  FAT COCK beer, even with an image of a plump rooster, was rejected b/c available to general audience.  Same result w/goods or services: if goods are scandalous then that’s evidence the mark will be scandalous: MR. HORSE COCK for adult movies.  Deodorant: MY SHIT DON’T STINK—because it was on nonscandalous goods, it would be available to everyone. Examiners often recognize the relevance of context de jure, but abandon that de facto.
 
In our data, success rate was less than 5%, compared to 44% for small businesses generally—small businesses were over 97% of applications in her data.  Low probability of response = related to lack of representation by attorney.  Applicants don’t respond to office actions very much—about 20% of the time.  80% = abandonment.  Applicants who do respond argue contextual factors.  Top arguments: alternate meanings of words; marketplace context; actual goods.  Only 2 of 232 were successfully passed to registration.
 
Where you see both approved and rejected: general trends exist.  Bitch has a larger number than whore, slut, and pothead. Examiners say that other registrations don’t matter, but examiners do consider them informally.
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IPSC, opening plenary

Posted on August 6, 2015 by rtushnet
IPSC at DePaul
 
Opening Plenary Session
 
Tributes to Benjamin Liu & Greg Lastowka, much-missed
colleagues who passed away in the last year.
 
Roberta Kwall, DePaul University College of Law
 
Changes in law school in last 15 years—rankings are more
set.  Money is tight.  Teaching loads are increasing, not just
numerically but in scope/areas other than IP. 
Affects ability to do scholarship. 
Schools may want us to work on the side: consistent w/ making our
students practice ready.  How do we keep
doing our scholarship?  Shari Motro, Scholarship Against Desire: authenticity
in legal scholarship.  Not shooting from
the hip, but doing the groundwork/getting an advanced degree if needed for the
breadth of knowledge you want to have. 
We won’t be judged in the future on the quantity of our work.  Need a safe, nurturing place to listen
without planning a response; the wisdom of the group will go up.

The key to successful scholarship is the ability to reinvent oneself, like
Madonna: true of scholarship venues as well as scholars.
 
Peter Yu, Texas A&M University School of Law
 
History: lots of schools were starting IP programs; one way
to maintain leadership is to bring scholars together, and bring schools
together as IPSC sponsors.  Importance of
creating community despite costs.
 
Mark Lemley, Stanford Law School
 
Size of IP community has grown a lot. Dramatic expansion in
subject matter from mostly ©—only 5 people have taught patent law longer than
Mark L and Dan Burk.  Lateral expansion
is good result: trade secret & design are newest additions.  Expansion in methodology, in particular empirical
work. 
 
Not so good things: increasing divide into more polarized
camps among scholars, not just practicing lawyers.  High protectionist group has their
conferences and low protectionists have theirs; paying less attention to the
other side, and that’s a worrisome thing. 
Perhaps result of real world importance of what we do—people are looking
for answers that support them and seek ideological scholarship.  But introduction of politics into IP
scholarly community is worrying.  Also
worrying: growing role of money. Resource constraints are important; but it’s
also a function of the real world relevance/politics: some people would like to
spend lots of money to get the answer they want.  That connection is becoming more clear.  You can have $ if you can demonstrate that
patent holdup isn’t a problem in the telecom industry, or if you can show that
intermediary liability is too great. 
Politics + money isn’t good for society at large and it’s not good for
the IP community.  Like the internet +
anonymity: can really mess things up.
 
What is to be done? 
IP community has long history of cohesiveness, talking to each
other.  That makes us the envy of most
other scholarly communities.  Robin
Feldman & Lemley are working on a statement of principles for taking money
for scholarship. 
 
Graeme Dinwoodie, University of Oxford Faculty of Law 
 
Mentoring of junior colleagues as an objective, pretty early
on. Advancement of ideas/development of scholarly community.  Social interactions make inevitable
professional disagreements an ordinary part of the interaction, rather than
tense (cf. constitutional law) and encourages new members of the community to
be willing to disagree.  New
internationalism: international participants, access to international
scholarship.  More scholarship is
occurring pre-tenure, which is a good thing without a research-based doctoral
agree. But many of the pretenure positions are short, and there’s tremendous
pressure to present at IPSC as well as to produce law review articles.  Given vast amount of info, do you have to
choose between reading, writing, and thinking? 
Encourage younger colleagues to attend/participate w/out need to present
and write; that may require deans to rethink allocation of travel funds.
 
Mike Madison: Publication styles tied to book chapters,
journal articles, etc.  What’s changed?
 
Lemley: Definite move towards the blog post (heh),
online/short/less footnoted article, which is in many respects a good thing;
law reviews traditionally bloat from need to explain everything to second year
law students. If you can assume a base of knowledge and get to the interesting
point quickly, that’s great. But “don’t write long articles” is no better than “don’t
write short” as a rule. New rule of no longer than 25,000 words privileges
certain kinds of scholarship and not others. 
How do we evaluate ideas in short/nontraditional forms?  Dennis Crouch has had big impact on patent
scholarship, mostly by writing short summaries/items of interest to the
academic world. Won’t today get hired at top school for that, which is a real
issue.  It’s a move with substantial
costs and substantial professional benefits. 
We are breaking out of traditional molds in various respects—more peer
reviewed journals; interdisciplinary publishing. But ways in which ideas are
communicated through smaller quicker responses are not ways the legal academy
is (yet) willing to recognize.
 
Kwall: Social media revolution has changed how we think and
write in our daily lives.  But when you’re
writing high impact scholarship, even if you’re going to be taking your article
and spinning it to editorials [or amicus briefs!] those have to be based on the
careful groundwork of your more thorough scholarship.  [For me, it goes both ways—having a series of
blog posts on, say, Dastar, enables
me to go back and identify trends/things that interest me theoretically.]  That can benefit your institution: being
featured in media is in some ways better for reputational effect than just
writing law review articles, but you can’t do media successfully without
scholarship.
 
Dinwoodie: We’ve lost a little bit in having space to work
through ideas; we need to be more pluralist about what’s good scholarship in
methods, place of publication, etc. Should be less hesitation for young
scholars to think about books than 15 years ago.  Online availability of chapters, at least, is
making the ideas in a book capable of reaching more places than it was.
 
Yu: When he started, advice was to not write a book until
you’ve been publishing for 10 years. The book he’d write now would be very
different than the book he would have written starting out.  Think about what type of book you want to
write—now he’s in a better position/more experienced.
 
Q about blogging: what’s the best way to avoid being taken
over by trolls/have a productive conversation? 
James Grimmelmann says blog in your own space.
 
Lemley: never read the comments.  Ironclad rule.  [Not so true of Livejournal, sigh.]  Discussion format has to be small group of
repeat players whom you know.

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